WordPress Foundation v. Purab Kharat
Claim Number: FA1507001627109
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Purab Kharat (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpressapi.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2015; the Forum received payment on July 10, 2015.
On June 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wordpressapi.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wordpressapi.com. Also on July 10, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the WORDPRESS mark through registration with the United States Patent and Trademark office (“USPTO”) (e.g., Reg. No. 3,201,424, registered January 23, 2007). Respondent’s <wordpressapi.com> domain name is confusingly similar to Complainant’s WORDPRESS mark. The disputed domain includes Complainant’s entire mark and adds the acronym “API” which stands for “application program interface” and relates to Complainant’s business. The use of the acronym “API” and the addition of the generic top-level domain (“gTLD”) “.com” does not alleviate the confusing similarity between Complainant’s mark and Respondent’s domain.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <wordpressapi.com> domain name, as evidenced by WHOIS and other information which identifies respondent as “Purab Kharat.” Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to sell and advertise third-party products and services not related to Complainant.
Policy ¶ 4(a)(iii)
Respondent has offered the disputed domain name for sale to Complainant. Respondent’s registration and use of the disputed domain name confuses and attracts internet users for Respondent’s commercial gain. Respondent had knowledge of Complainant’s rights in the WORDPRESS mark at the time of registration.
B. Respondent
Respondent has failed to submit a Response.
Complainant, WordPress Foundation, is a leading provider of internet publishing tools. Complainant has rights in the WORDPRESS mark through registration with the United States Patent and Trademark office (“USPTO”) (e.g., Reg. No. 3,201,424, registered January 23, 2007).
Respondent, Purab Kharat, registered the <wordpressapi.com> domain name on January 12, 2010. Respondent’s website offers services related to website design services using, in some cases, components of the WordPress software, without Complainant’s permission. Respondent’s website features links to advertisements for third-party services presumably for Respondent’s commercial gain.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the WORDPRESS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Respondent’s <wordpressapi.com> domain name is confusingly similar to Complainant’s WORDPRESS mark under Policy ¶ 4(a)(i). Respondent’s disputed domain merely adds the acronym “API” and the gTLD “.com” to the WORDPRESS mark. The acronym “API” stands for “application program interface” which is a technological phrase related to Complainant’s business as a leading provider of internet publishing tools. The inclusion of gTLDs and terms that are descriptive of a complainant’s business do not distinguish the disputed domain name from a mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Respondent is not commonly known by the <wordpressapi.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information lists “Purab Kharat” as the registrant. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s use of the disputed <wordpressapi.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. Respondent’s website offers services related to website design services using, in some cases, components of the WordPress software, without Complainant’s permission. Respondent’s web site features links to advertisements for third-party services presumably for Respondent’s commercial gain. Panels have held that a respondent using a confusingly similar domain to resolve to a website that hosts commercial advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
Respondent has attempted to sell the <wordpressapi.com> domain name to Complainant, demonstrating bad faith under Policy ¶ 4(b)(i). Specifically, Respondent made a demand for $1,000 to transfer the name to Complainant. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Respondent’s registration and use of the disputed domain name confuses and attracts internet users for Respondent’s commercial gain. Panels have consistently held that a respondent using a domain confusingly similar to a complainant’s mark for the purposes of commercial profit has demonstrated bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Respondent had actual knowledge of Complainant's rights in the WORDPRESS mark prior to registering the <wordpressapi.com> domain name which is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpressapi.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 18, 2015
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